Patent Litigation in Vietnam

    Overview

    Since the 1990s, the number of inventions and technological developments had increase, in Vietnam and abroad. Accordingly, the need of protection, by using patents and Intellectual Property (IP), became a large issue. To reach this protection, and facilitate the process for applicants, the National Office of Intellectual Property of Vietnam (NOIP) was created, on July 25th 1982; by the Decree No. 125/HDBT to restructure the State Committee of Science and Technology (now renamed Ministry of Science and Technology).

    Similarly to Vietnamese inventors, Foreigners can apply and obtain a protection for their inventions, effective on the Vietnamese territory. The Vietnamese intellectual property law grants certain exclusive right to the intangible assets [Article 122 & 123 Law on Intellectual Property 2005] . Consequently, if foreign applicants can obtain a protection for their invention in Vietnam, then it means it is possible to take action when there is an infringement.

    Law & Treaties

    Vietnam became a World Intellectual Property Organization’s (WTO) member in 1976, and signed and ratified its treaties, such as the Patent Cooperation Treaty (PCT) of 1993. And following it, various numbers of laws and decrees were taken by the country, to protect and help the development of IP in Vietnam. The most recent one, and applicable, is the Law No. 50/2005/QH11 of November 29, 2005, on Intellectual Property, which was amending by the Law No. 36/2009/QH12 of June 19, 2009.

    Dispute

    In Vietnam, to solve a dispute in case of an infringement of a patent, as for any intellectual property cases, two options are possible to settle it:

    • Dispute settlement mechanism without litigation: negotiation & mediation
    • Dispute settlement mechanism with litigation: arbitration & civil litigation

    It is more common for parties to use the easiest settlement, as negotiation or mediation. But once an agreement isn’t reach, the resolution can’t be done without taking the case before a judge or an arbitrator. Usually, arbitration is the most suitable for IP disputes, as it can reach the featured requirements of intellectual property dispute (multinational, information security, complexity). But to reach arbitration, both parties shall need to have planned it before, in an agreement.

    Litigation

    For a civil litigation, juridical courts are competent, but no special chamber deals with patent infringement. Disputes over intellectual property rights and technology transfer between individuals and organizations are considered as commercial disputes to be trialed at the courts of the province [Articles 30 & 34 Civil Procedure Code of June 15, 2004] .

    The court shall take the following civil remedies to handle organizations and individuals that have committed acts of infringement of intellectual property rights [Article 202 No. 50/2005/QH11 Law on Intellectual Property of November 29, 2005] :

    • Compelling termination of the infringement of intellectual property rights;
    • Compelling public rectification and apology;
    • Compelling the performance of civil obligations;
    • Compelling compensation for damages;
    • Compelling destruction, distribution or use for non-commercial purpose in respect of goods, materials and implements the predominant use of which has been in the creation or trading of intellectual property right infringing goods, provided that such distribution and use does not
      affect the exploitation of rights by the intellectual property rights holder.

    In case of IP dispute under the Vietnamese Law, the first step is to take an action before the NOIP. For an opposition, an appeal, a cancellation and an invalidation of a patent, the applicant has to file a demand, but the NOIP doesn’t have a jurisdiction in patent enforcement. Only experts can help, and the case will be seen by the Ministry of Science and Technology, which is the most renowned in IP expertise and experience in Vietnam, before going to the courts.

    NOIP

    First step, including an opposition, appeal, cancellation and invalidation. Participating in intellectual property dispute settlements; conducting legal appraisals to settle intellectual property disputes within the assigned authority.

    Ministry of Science & Technology

    The most renowned in IP expertise and experience in Vietnam. Inspectorates and deals with patent infringement administrative actions

    Court

    The Vietnamese courts have still low experience with IP cases, which is the reason why the judges are working with experts. In addition, during the dispute, the IP owner may request the court to apply provisional emergency measures in order to prevent damages.

    The Vietnamese courts have still low experience with IP cases, which is the judges are working with experts. But in practice, IP rights are not proactively protected by civil measures. The number of cases resolved by courts is much lower than the number of cases handled by administrative measures.

    Case precedent

    On February 2, 2015, an interesting case was given by the Ho Chi Minh City Court, as it was the first IP trial including a foreign patent.

    Facts

    The plaintiff: An European agrochemical company which holds a patent in Vietnam relating to an agrochemical combination.The patent covers composition and plant protection products comprising the combination. The defendant: A pesticide producer in HCMC, which used some infringing pesticide.

    Resolution

    Conclusion of the Court concluded: The defendant had committed an infringement of the patent rights of the plaintiff. Consequences: The court accepted all of the plaintiff’s claims, and ordered the defendant to stop producing the infringing products and recall them from the market for destruction. Al permanent injunction was rendered, prohibiting the infringer from importing any raw materials that infringe the plaintiff’s patent and awarded legal fees to the plaintiff.

    Precedent

    The Court dismissed the defendant’s motion: As long as the patent is still valid, the court has to resolve the dispute to protect the legitimate rights and interests of the plaintiff, even if the defendant had an expectation about the invalidation of the patent during the civil litigation

    IP litigations are still something the court will rarely deal with, because of its complexity and the process is tedious and complicated, but not as effective as administrative measures. However, it is accessible, as a foreign owner, and there is precedent of winning case before the Vietnamese court. But the most effective way to deal with patent infringement should be by arbitration.

     

    Author Ms. Shéhérazade Rachid @ Seoul Law Firm


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